The Federal Circuit for the fourth time this year has confirmed eligibility of software under Section 101. In perhaps the most clear decision to date on the issue of subject matter eligibility, the Federal Circuit held that McRo’s claims directed toward lip synchronization are patent eligible. The lower District court had struggled with the amorphous test set forth by the Supreme Court. It held that the claims essentially were two broad to be non-abstract. However, the Federal Circuit struck this down and stated that breadth does not equal abstract. Instead, the test for abstractness was refocused on pre-emption. That is, the test is whether the claims preempt all ways to practice an idea. For instance, lip synchronization using a computer would preempt all methods of lip synchronization completely. However, as with McRo’s claims, a specific broad way of performing lip synchronization is not abstract because there were not ways to perform lip synchronization.

The Federal Circuit appears to have pivoted a little toward preemption. This is a positive development because preemption is something that objectively can be proven. The test now for software and other inventions really is whether the claims are directed toward an invention where the result could be achieved via another solution - even if the other solution is less marketable. This test is relatively easy to satisfy moving forward.